A Slanted View of Scandalous and Disparaging Trademarks

By Esther Sirotnik
January 17, 2017

In a flurry of amicus briefs recently filed in the Lee v. Tam case, the analysis of whether the First Amendment and the Lanham Act can play nicely is bandied about from many angles. As counsel for a company that is frequently imploring authors of Bar ethics opinions to respect important First Amendment principles, I have a particular interest in discourse surrounding governmental regulation of speech. As we move forward into an ever-advancing global world of technology and commerce, and a shifting political climate, it is critical that opportunities to evaluate (and re-evaluate) legislation impacting the free flow of speech are taken. It appears that the Supreme Court agrees, as it has scheduled oral argument in Lee v. Tam for January 18.

The genesis of the case is a Portland, Oregon all-Asian-American band called The Slants, founded by petitioner Simon Shiao Tam. Tam filed an application with the United States Patent and Trademark Office to register the band’s name as a federally protected trademark. He said he named his band partly as a move to reclaim a word that has long been seen as a racial slur targeting Asians. He has also pointed out clever double and triple entendres in the vein of a musical reference to guitar slants, and the band members having unique slants on life as minorities.

The USPTO said “NO” to the application on the basis that “The Slants” is a highly disparaging term and therefore must be denied registration under Section 2(a) of the Lanham Act.

Subsequent applications (all denied) and a hearing before a panel of appellate judges (who ruled against Tam) later, the case was heard by the U.S. Court of Appeals for the Federal Circuit. The Court held (In re Tam), by a 9-to-3 vote, that the exclusion of “disparaging” marks violates the First Amendment. The ruling states: “We recognize that invalidating this provision may lead to the wider registration of marks that offend vulnerable communities.” The Court goes on to say, “Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”

The Court continues, “Even when speech ‘inflicts great pain,’ our Constitution protects it to ensure that we do not stifle public debate.” The ruling also calls out the cultural and political importance of unfettered speech, saying, “With their lyrics, performances, and band name, Mr. Tam and his band weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.”

The government asked for review, and Simon Tam responded to the petition welcoming the opportunity. “This issue is undeniably important” reads Tam’s brief. “The Court is very likely to address it in the near future, in another case if not in this one.”

Yes. There is no time like the present.

This brings us to the Supreme Court’s doorstep, where the questions and arguments presented in a multitude of amicus briefs offer a vast landscape of legal analysis and opinion. In the midst of this tundra is one shining north star of a question, asked in the amicus brief submitted to the Court by the Cato Institute and a self-proclaimed ‘Basket of Deplorable People and Institutions’:  “Does the government get to decide what’s a slur?”

The shadow of the First Amendment looms large over Cato’s question. Because, really, when the question is posed that way, I’m going to answer with a resolute NO.

Let’s take a minute to look at how those with an opposing view split their hairs. A pivotal case on the other side of the fence is the litigation surrounding the registrability of the term “Redskins” in Pro-Football, Inc. v. Blackhorse, 112 F. Supp. 3d 439, 467 (E.D. Va. 2015). In that case, the District Court upheld the cancellation of six service mark registrations by the Trademark Trial and Appeal Board (“TTAB”). The TTAB based the cancellation of the marks on the view that the use of the “Redskins” mark “may disparage” a substantial composite of Native Americans. The court held this was in line with Section 2(a) of the Lanham Act and the Constitution because the Lanham Act does not implicate the First Amendment, and trademark registration is “government speech” and therefore exempt from First Amendment scrutiny.

Interesting.

Amanda Blackhorse and friends have filed their own amicus brief with the Supreme Court echoing these arguments. Trademark registration is government speech regulated by the TTAB. Every citizen is free to exercise their First Amendment rights by using whatever trademarks they like, they just don’t get to register them if the government thinks they are offensive. These arguments also nod to the idea that the disparagement provision, which in their opinion does not proscribe conduct or impose civil or criminal penalties, should receive deferential review and is not void for vagueness under the Due Process Clause. The brief goes on to argue that the USPTO regulations are fair and transparent, and that under a plain language interpretation of the disparagement provision, a mark is not eligible for registration if it “may disparage.” At first blush, and with a squint, one could find merit to these arguments. But a deeper analysis reveals a different path.

Let’s take a look at what Cato and the Deplorables (the Amici note that this is also a good band name!) have to say. The brief deflates the Blackhorse position that a trademark is a trademark is a trademark, and illuminates the argument that the disparagement provision punishes trademark owners by both denying them the benefits of federal registration, and exposing them to severely negative consequences a lack of registration can bring. This punishment in turn discourages some names and encourages others. Yes, a trademark discouraged by the disparagement clause might be one that pushes some people out of their comfort zones, but the government as arbiter of this type of expression is a direct hit on free expression and political speech. The brief also aptly points out that it’s a mistake to rely on government officials to neutrally determine which marks “may disparage.” And, as the Slants and others have shown us, there are many instances that involve the “taking back” of disparaging epithets by those groups the wielded words have sought to degrade. Indeed. Reclamations of epithets, and the cultural debate that follows, are at the core of First Amendment debate. The Cato brief does an excellent job fleshing this out. The government should not discourage free speech by withholding benefits, cannot be neutral in deciding what is and is not a slur, and Section 2(a) of the Lanham Act is viewpoint discriminatory on its face, thus violating the First Amendment.

So let’s take stock as the Supreme Court gears up to hear Tam and the government argue it out.

Anyone who understands the basics of trademark law knows that statutory and common law rights do not compare to the rights obtained by federally registering a mark. We live in an ever-growing global economy. A geographical “right” does not compare to a national right with inroads into international rights. It’s like saying you have a pond to fish in and therefore wouldn’t benefit from access to the ocean. The Blackhorse contingency is resting on a flimsy argument on this front. I’m going to check that one off the list.

Even flimsier is the idea that a government official, by calling a trademark government speech and regulating it as such, effectively holds the key to what “may be” disparaging. So, NO, the government shouldn’t be allowed to use the Lanham Act as a back door for regulating viewpoint-based speech. At the very core of this discourse is the evident conclusion that Section 2(a) of the Lanham Act violates the First Amendment. The government shouldn’t be mucking about in the First Amendment. If the Supreme Court gets on board, the landscape of trademarks will likely be altered, and someone will be offended – but that is not for the government to regulate or decide.

It’s time to put the anachronistic and ill-founded disparagement clause to rest. Let’s call a spade a spade. The cultural and societal value of the free flow of speech trumps government regulation. The Supreme Court should uphold the Constitution and confirm the importance of robust political debate, cultural discourse, and the right to use ANY words as part of a personal identity. This will be a win for all.

The Author

Esther Sirotnik

Esther Sirotnik is Corporate Counsel for Avvo. Esther has previously held positions as corporate counsel in the San Francisco Bay Area, with a legal and business background unique to high-growth technology companies.

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